What do you know about the trademark registration process? Australian intellectual property laws define a trademark as:
“A sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.” – Trade Marks Act
A ‘sign’, for the intent of trademark registration, covers almost anything. Trademarks can be a single word or a group of words; your company logo; a lone graphic; a colour, scent, shape, packaging, or a sound. The key to registering any of these as a trademark is ensuring that your ‘sign’ – or mark – uniquely identifies and distinguishes your products or services.
Your trademark works to identify not only the product, but also the origin of the product. In recognising your trademark, consumers also recognise that product as belonging to your company. Your mark should not only describe the nature of your product or service: it should also be as unique as possible in order to distinguish itself amongst your competition. It is difficult to register a trademark that is similar to another mark: in order to be successful in your trademark registration, ensure that you design a mark that is unique to your business and also within the marketplace.
The first step on the path to trademark registration is to conduct a trademark search. The purpose of this search is to identify any other pre-existing marks that are identical or confusingly similar to your own mark. Should you find that another mark is conflicting with your own, you should potentially redesign your own mark to remove the element/elements that conflict. When your mark is confusingly similar to another registered mark, you will not only have difficulties in registering your mark, but you might also be infringing on the rights of the trademark owner.
A trademark registration search will assist you in ensuring that your mark is available for your use and will prevent you from infringing on the rights of a registered trademark holder. The most unique trademark is the most valuable trademark.
Navigating search databases can be a complex and confusing process. IP Australia has a variety of search tools available for your use: however, you can hire a trademark expert to conduct the searches for you. We offer you the service of conducting both initial cursory searches and detailed, comprehensive searches of all relevant Australian trademark databases. We can also conduct a market search to identify the trademark trends within your marketplace.
Filing an Application and Identifying Trademark Classes
Your trademark works to distinguish the nature of your products or services, and so when you are filing your application, you need to specify what those products or services are.
All products and services are divided into internationally recognised classes. There are a total of 45 product and service classes to choose from: you can nominate any number of these classes in your application, so long as they are relevant to the products or services you provide. It is important to nominate all necessary classes in your trademark application, so to customise your level of protection across different industries.
One of our trademark professionals can advise you on the relevant classes, as well as prepare and file your application on your behalf. We will inform IP Australia of the class numbers your products or services fall under and provide a description of the products or services that your mark is used to distinguish.
We aim to assist you throughout the entirety of the trademark registration process to ensure that your mark achieves registration with minimal issue or contest. When we file an application on your behalf, we will be listed as your trademark agent on the official record. This way, all of IP Australia’s correspondence will be received by our office for our attention. In addition, should your application be opposed, we will receive all queries and challenges. This means that we are able to review, report, and advise you on the steps to take in the face of opposition or rejection.
IP Australia: Examination and Approval
Once your trademark application has been filed with IP Australia, it will undergo an examination period to ensure that the basic filing requirements have been met, and to decide whether your mark is eligible for registration.
This can take, on average, four months. Once the examination has been completed, your application will receive either an ‘adverse report’ specifying grounds for rejection, or a ‘notice of acceptance’ should your application be successful.
Trademark Registration – Notice of Acceptance
You will receive a notice of acceptance if your trademark application is issue-free. Once your mark has been accepted for potential registration, it must undergo a three-month opposition period during which other parties can contest your application for registration. You mark will only be opposed if other parties believe that your mark infringes on their own intellectual property rights.
If your mark passes through this period unopposed, you will be successfully registered as the owner of your trademark. Once your registration is complete, you are entitled to your rights as a trademark holder.
Trademark Registration – Adverse Reports
If your examiner finds that there are grounds for rejection in your application, you will receive an adverse report. This does not mean that your application is null and void: rather, it provides you with the opportunity to remedy the issues that are outlined in the report. You might be required to alter your mark if it is too similar to another registered trademark, or you might be asked to provide evidence of your current and intended use of the mark. We can assist you in compiling and filing the required evidence and ensure that your mark progresses to registration.
Trademark Registration Achieved
Once your mark has been accepted for registration and passed through the opposition period successfully, your mark will proceed to trademark registration. You will be required to pay a registration fee: we can do this on your behalf by the required date. Once your trademark registration has been issued, you are protected by trademark rights for a period of 10 years.